Ex Parte Lioy et al

Patent Trial and Appeal Board

Mar 27, 2014

11193068 (P.T.A.B. Mar. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCELLO LIOY, JUN WANG,
MASAKAZU SHIROTA, RAYMOND TAH-SHENG HSU,
and SIVARAMAKRISHNA VEEREPALLI
____________

Appeal 2011-006733
Application 11/193,068
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, JOHN A. EVANS, and
CATHERINE SHIANG, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review2 under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims 10-13, 15, 16, 27-30, 35-37, 39, 42-46,

1 The Real Party in Interest is Qualcomm, Inc.
2 We have considered in this decision only those arguments Appellants
actually raised in the Brief. Any other arguments which Appellants could
have made but chose not to make in the Brief are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(iv).
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and 52-813 as anticipated, as obvious, and as reciting non-statutory subject
matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.4

STATEMENT OF THE CASE
The claims relate to packet data communications and, more
particularly, to initial communication sessions prior to establishing packet
data communications for network access. Spec. ¶ [0002].
Claims 10, 27, 35, 42, 63, 70, 74, and 78 are independent. The claims
have not been argued separately and therefore stand or fall together. 37
C.F.R. § 41.37(c)(1)(iv). An understanding of the invention can be derived
from a reading of exemplary Claim 10, which is reproduced below with
disputed limitations italicized:
10. A method for a communication session with a node
seeking network access, comprising:
receiving, at a network access node from said node, a
first message including a set of parameter options defining a
plurality of configurations supported by said node for
establishing network access, wherein the set of parameter
options include at least one parameter option for authentication,
a plurality of parameter options for link configuration, and a
plurality of parameter options for network access;
selecting a subset of the set of parameter options for
providing network access to said node, wherein the subset of
the set of parameter options correspond to options supported by
the network access node; and

3 App. Br. 12.
4 Our decision refers to Appellants’ Appeal Brief filed October 6, 2010
(“App. Br.”); Examiner’s Answer mailed December 21, 2010 (“Ans.”); Final
Office Action mailed March 31, 2010 (“Final Rej.”); and the original
Specification filed July 28, 2005 (“Spec.”).
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sending to said node a second message for establishing
said network access, wherein the second message includes the
selected subset of the set of parameter options correspond to
options supported by the network access node.
References and Rejections
The Examiner relies upon the prior art as follows:
Ludwig et al. US 6,487,218 B1 Nov. 26, 2002
Memorandum from the Network Working Group, Request for Comments:
1661, The Point-to-Point Protocol (PPP) (W. Simpson ed., July 1994)
[hereinafter Simpson].
The claims stand rejected as follows:5
1. Claims 74-81 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Ans. 4-5.
2. Claims 10, 11, 13, 16, 27, 28, 30, 35-37, 39, 42, 43, 45, 46, 52-55, 57,
59, 61, 63-68, 70-72, 74-76, and 78-80 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Ludwig. Ans. 6-8.
3. Claims 12, 15, 29, 44, 56, 58, 60, 62, 69, 73, 77, and 81 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Ludwig in view of
Simpson. Ans. 9-10.

NON-STATUTORY SUBJECT MATTER
ISSUE AND ANALYSIS
Appellants contend the limitation a “computer-readable storage
medium” of Claims 74-81 is not directed toward transitory, propagating
signals, as the claims recite a storage medium. App. Br. 14. Appellants
argue the addition of the term “storage” is equivalent to the term “non-

5 Based on Appellants’ arguments in the Appeal Brief, we will decide the
appeal on the basis of claims as set forth below. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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transitory” suggested by the Kappos memo6 in order to distinguish the
claims from a transitory, propagating signal.
The Examiner finds the broadest reasonable interpretation of the
claims drawn to a computer-readable storage medium covers forms of non-
transitory tangible media and transitory propagating signals per se in view of
the ordinary and customary meaning of computer readable media,
particularly when the specification is silent. Ans. 4.
We disagree with Appellants’ contention. The language “non-
transitory,” as suggested by the Kappos memo, does not appear in Claim 74,
and thus the broadest reasonable interpretation of the claims covers a
transitory signal per se. A transitory, propagating signal is not a process,
machine, manufacture, or composition of matter and, as such, cannot be
patentable subject matter. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir.
2007).7
We, sustain the rejection of Claims 74-81 under 35 U.S.C. § 101.

ANTICIPATION
APPELLANTS’ CONTENTIONS
Ludwig (Claims 10, 11, 13, 16, 27, 28, 30, 35-37, 39, 42, 43, 45, 46,
52-55, 57, 59, 61, 63-68, 70-72, 74-76, and 78-80) fails to teach or suggest a

6 David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23, 2012) [hereinafter Kappos
memo].
7 A claim drawn to such a computer readable medium that covers both
transitory and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection under 35
U.S.C. § 101 by adding the limitation “non-transitory” to the claim. See
Kappos memo.
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first message including a set of parameter options defining a plurality of
configurations supported by said node for establishing network access, as
recited by independent Claims 10, 27, 35, 42, 63, 70, 74, and 78, because:
a. The “first” message of Ludwig is a link control protocol (LCP)
packet, which does not contain a plurality of configurations
supported by said node for establishing network access; and
b. The masked packet identified by the Examiner as the “first”
message of Ludwig is sent after the LCP packet; therefore, the
masked packet cannot be a “first” message. App. Br. 15.
ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 14-16),
the issue presented on appeal with respect to Ludwig is whether the
Examiner erred in finding Ludwig to teach or suggest a first message
including a set of parameter options defining a plurality of configurations
supported by said node for establishing network access.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred, but we do not agree with Appellants’
conclusions. The Examiner finds the masked packet of Ludwig, which
includes the required set of parameter options, is equivalent to the “first”
message of the claims. Ans. 12. Appellants argue that Ludwig’s masked
packets are not the claimed “first” message. Rather, Ludwig’s “first
message” is a conventional LCP packet, which does not comprise a set of
parameter options defining a plurality of configurations supported by said
node for establishing network access. App. Br. 15. Moreover, Ludwig
explicitly discloses that the “masked packets” identified by the Examiner as
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the “first” message must be sent after the LCP packets; thus, they cannot be
a “first” message. App. Br. 15-16.
We find that Appellants’ arguments are not commensurate in scope
with the claims. Specifically, Appellants have not provided an explicit
definition of the claim term “message” that excludes a “message” as
comprising a plurality of packets. Ludwig discloses:
[t]he process of establishing a link is conducted by a
CSD-PPP peer in such a way that first a standard LCP packet
(one fully conforming to the regular process of link
establishment in accordance with standard PPP) is sent, and
back-to-back after that a masked packet or preferably a set of
masked packets is sent back-to-back.
Ludwig, col. 9, ll. 19-24. Moreover, “both peers will take on a predefined
set of LCP and IPCP options, e.g. the set defined in Table 2 below, and start
off with the LCP, authentication and IPCP phase and the exchange of IP
packets concurrently.” Id. at col. 8, ll. 40-44. In view of this disclosure, we
find that Ludwig discloses a “first message” that is comprised of a plurality
of packets, which, in aggregate, contain all of the functions as claimed. See
id. at Table 2.
We are not persuaded that the Examiner has erred in rejecting Claims
10, 11, 13, 16, 27, 28, 30, 35-37, 39, 42, 43, 45, 46, 52-55, 57, 59, 61, 63-68,
70-72, 74-76, and 78-80 under 35 U.S.C. § 102.

OBVIOUSNESS
ISSUE AND ANALYSIS
Appellants argue the patentability of dependent Claims 12, 15, 29, 44,
56, 58, 60, 62, 69, 73, 77, and 81 for the same reasons as discussed above.
Appellants contend that Simpson fails to cure the deficiencies of Ludwig.
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App. Br. 17. As discussed above, we are not persuaded that the Examiner
erred in finding that Ludwig teaches or suggests the claimed “first message.”
In view of the foregoing discussion, we decline to sustain the rejection
of Claims 12, 15, 29, 44, 56, 58, 60, 62, 69, 73, 77, and 81 under 35 U.S.C.
§ 103.

ORDER
The rejection of Claims 74-81 under 35 U.S.C. § 101 is AFFIRMED.
The rejection of Claims 10, 11, 13, 16, 27, 28, 30, 35-37, 39, 42, 43,
45, 46, 52-55, 57, 59, 61, 63-68, 70-72, 74-76, and 78-80 under 35 U.S.C. §
102 is AFFIRMED.
The rejection of Claims 12, 15, 29, 44, 56, 58, 60, 62, 69, 73, 77, and
81 under 35 U.S.C. § 103 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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